Filing a Patents in India

1. What are the stages of filing a patent in India?

The stages of filing a patent in India are as follows:

a) Filing a patent application in India: This stage includes filing an application for a patent in the prescribed format along with the necessary documents at the Indian Patent Office (IPO). On receipt of the application, the IPO accords a date and application number to it.

b) Publication of the application: After the application has been filed, the IPO publishes the application in the official Patent Journal making it available for public inspection. A patent application is published after 18 months from the date of filing, or date of priority, whichever is earlier.

c) Examination of the Application: The IPO examines the application only after the application is published and a request for examination is filed along with the prescribed fee. After a request for examination is filed, the application is substantively examined to ensure that all the requirements under the Patents Act, (the Act) are met. Based on the examination, the Controller issues a First Examination Report (FER).

The applicant is required to file a response to the FER within six months.

If the response or amendment filed by the applicant does not satisfy the requirements laid down by the Act, the Controller offers the applicant a hearing (if requested by the applicant) and decides the case on merits. The applicant is required to file the written submissions with any proposed amendments within fifteen days. After hearing the applicant and reviewing the written submissions, the Controller may specify or permit such amendments as they think fit and grant the patent. The Controller may refuse to grant the patent if any requirements of the Act are not complied with.

d) Grant of Patent: If all objections have been addressed, the application proceeds to be granted. A patent is normally granted within a few months of the filing of the response to the FER or the hearing if all the requirements under the Act have been met.

e) Maintenance of Patent: After the grant of the patent, the patentee must pay a renewal fee every year to keep the patent in force. This renewal fee starts from the expiration of the second year from the date of filing. However, the renewal fee is payable (along with the arrears) only after the grant of the patent.

2. When is a patent application published in India?

A patent application is published after 18 months from the date of filing, or date of priority, whichever is earlier.

3. Is it possible to expedite the publication of a patent application in India?

Yes, the publication can be expedited by filing a request for an early publication. The request will be considered if the subject matter disclosed in the patent application is not relevant for defence purposes or atomic energy. Once such a request is filed, the IPO generally publishes the application within one month of filing the request.

4. What happens after publication of a patent application in India?

Upon publication, the patent application along with the complete specification and any other documents filed in respect of the application is also made available on the IPO’s website. One may obtain certified copies of the documents from the IPO for a fee. Upon publication, any biological material submitted at the International Depository in respect of the application is also made available to the public.

After the publication of the application, the applicant enjoys the privileges and rights of a granted patent. Although the applicant can file an infringement suit only after the grant of the patent, they can claim damages from the date of publication of the application in India.

Any person can file a pre-grant representation at the IPO against the published application opposing the grant of a patent.

Although the Act indicates that any person can file a pre-grant opposition, in view of recent jurisprudence, it is recommended that a person who is involved in the field of technology of the Patent files a pre-grant opposition.

The application can now be considered for the examination by the IPO, provided a Request for Examination has been filed.

5. Who can file a request for examination of a patent application in India?

A request for examination can be filed by the applicant or a person interested in the patent application.

6. When can a request for examination be filed in India?

A request for examination of a patent application in India may be filed any time within forty-eight months from the date of filing or the date of priority, whichever is earlier. In a case where secrecy direction has been issued under the the Act, the request for examination may be made within forty-eight months from the date of priority or from the date of filing of the patent application, or within six months from the date of revocation of the secrecy direction, whichever is later.

In the case of a national phase application, the application is taken up for examination 31 months after the priority date. However, a request for express examination may be filed to initiate the examination of such an application before 31 months along with a request for early publication.

7. Can a request for examination of a patent application in India be filed after the due date?

No, this timeline is not extendable. If the request for examination is not filed within the time limit, the application is irrevocably terminated.

8. What is the timeline for filing a response to patent examination report in India? Can this timeline be extended?

The response to an examination report in India is required to be filed within 6 months from the date of issuance of the examination report. An extension of a maximum period of 3 months is available, provided a request for extension is filed within the 6 months period. Failure to submit the response within this time limit results in abandonment of the application.

9. What is the timeline for filing written submissions after the patent examination hearing in India? Can this timeline be extended?

The written submissions are required to be filed within 15 days from the date of hearing. This timeline can be extended for 1 month by filing a request for extension before the expiry of said 15 days.